Ex Parte Thomas

Patent Trial and Appeal Board

Jul 25, 2018

14255717 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/255,717 04/17/2014 Scott D. Thomas
104102 7590 07/26/2018
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P024288-GMVE-DPH 6510
EXAMINER
CONDRA, DARLENE P
ART UNIT PAPER NUMBER
3616
MAIL DATE DELIVERY MODE
07/26/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT D. THOMAS
Appeal2017-005209
Application 14/255,717
Technology Center 3600
Before WILLIAM A. CAPP, ARTHUR M. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5, 7, 8, 10, 12-20, 22, and 23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant is the Applicant, GM Global Technology Operations LLC.
General Motors LLC is identified as the real party in interest. Appeal Br. 6.
Appeal2017-005209
Application 14/255,717
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A product comprising:
an airbag mounted laterally in a rear end of a fender
laterally adjacent a hood and forward of a vehicle side door
which deploys from the fender when activated to protect a
pedestrian from impacting at least a portion of the frontal area
of a vehicle structure.
REJECTIONS
1) Claims 1, 4, 5, 7, 8, 14, and 20 are provisionally rejected on the
ground of non-statutory double patenting over claims 1, 3, 5, 4, 7,
2, and 19 of Application No. 14/255,769.
2) Claims 1, 2, 5, 8, 12-14, 17, and 20 are rejected under 35 U.S.C. §
I03(a) as unpatentable over Inoue (US 2010/0164203 Al,
published July 1, 2010) and Fayt (US 2005/0140174 Al, published
June 30, 2005).
3) Claim 3 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Inoue, Fayt, and Hamada (US 6,938,715 B2, issued Sept. 6, 2005).
4) Claim 4 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Inoue, Fayt, and Hayashi (US 2009/0127016 Al, published May
21, 2009). 2
5) Claim 7 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Inoue, Fayt, and Soderquist (US 2003/0189319 Al, published Oct.
9, 2003).
2 The Examiner withdrew a rejection of claim 6 as unpatentable over Inoue,
Fayt, and Hayashi. (Ans. 2).
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Application 14/255,717
6) Claims 10 and 18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Inoue, Fayt, and Takimoto (US 2004/0232663
Al, published Nov. 25, 2004).
7) Claim 15 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Inoue, Fayt, and Retallick (US 2006/0087105 Al, published Apr.
27, 2006).
8) Claim 16 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Inoue, Fayt, and Rajasingham (US 2007 /0017724 Al, published
Jan. 25, 2007).
9) Claim 19 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Inoue, Fayt, and Rydsmo (US 8,727,061 B2, issued May 20,
2014).
10) Claim 22 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Inoue and Breuninger (US 2005/0206138 Al, published Sept.
22, 2005).
11) Claim 23 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Inoue, Fayt, and Mori (US 2005/0206139 Al, published Sept.
22, 2005).
DISCUSSION
Rejection 1
The Examiner provisionally rejects claims 1, 4, 5, 7, 8, 14, and 20 on
the ground ofnonstatutory double patenting over claims 1, 3, 5, 4, 7, 2, and
19 of Application No. 14/255,769. Final Act. 3. A Notice of Abandonment
of Application No. 14/255,769 was entered on January 26, 2017. As a
result, we do not reach this rejection as it is now moot.
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Application 14/255,717
Rejection 2
Appellant argues claims 1, 2, 5, 12-14, and 20 as a group. Appeal
Br. 18-22. We select claim 1 as representative and claims 2, 5, 12, 13, 14,
and 20 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Inoue discloses "an airbag 27 mounted in a
rear end of a fender laterally adjacent a hood/bonnet," but also finds that
Inoue "does not disclose that the airbag is mounted laterally." Final Act. 3-
4. The Examiner further explains that "Inoue does not disclose that the
airbag is mounted laterally, but on a horizontal structure 8 for a vertical
mounting" and "Fayt discloses that fender airbags 34 can be mounted ... on
a vertical surface for a laterally mounted airbag." Ans. 2-3. 3 Thus, the
Examiner construes "mounted laterally" in claim 1 as "mounted laterally on
a vertical structure." Final Act. 4. Appellant's arguments for patentability
are all directed to alleged errors in the combination of Inoue and Fayt.
Appeal Br. 18-22.
In order to evaluate this rejection, we must first determine whether the
Examiner's construction of claim 1 is correct. We give claim terms their
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. See In re Suitco
Surface, Inc., 603 F.3d 1255, 1259---60 (Fed. Cir. 2010); In re Morris, 127
F.3d 1048, 1054--55 (Fed. Cir. 1997). Although the claims are interpreted in
light of the Specification, limitations from the Specification are not read into
the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
3 We note that Figure 2A of Inoue illustrates that Inoue' s airbag module is
mounted to horizontal surface 8. See Inoue, Fig. 2A.
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Application 14/255,717
We note initially that claim 1 does not explicitly require mounting the
airbag on a vertical surface. Appellant's airbag module 81 is illustrated in
Figure 1. Spec. Fig. 1. The airbag module is shown in dotted lines and we
cannot discern whether airbag module 81 is mounted to a vertical surface or
a horizontal surface. Id. Appellant's Specification provides that "airbag
module 81 may be located in the fender region 1 laterally adjacent and
below a vehicle's hood 3" and "may be attached to the vehicle structure 13
inside the fender region 1." Id. ,r 101. Further, "airbag module 81 may also
have an attachment device or an integral metal connection which mates the
vehicle 13 and the pedestrian protection airbag module 81 together." Id.
We are unable to locate any requirement in the Specification that the airbag
module must be mounted on a vertical surface. We note that vehicle
structure 13, which is only partially shown in Figure 1, appears to be a
generally vertical surface. However, limiting claim 1 to mounting to a
vertical surface based on the partial representation of vehicle structure 13
shown in Figure 1 would amount to improperly reading a limitation from
one embodiment of the Specification into claim 1, which we decline to do.
We, thus, determine that one of ordinary skill in the art, after reviewing the
Specification, would not reasonably determine that the limitation in claim 1
of "an airbag mounted laterally" is limited to an airbag mounted laterally on
a vertical surface.
Due to the addition of a limitation that is not required by claim 1, the
Examiner relied on Fayt for disclosure of an airbag "mounted laterally on a
vertical structure." Final Act. 4 ( emphasis added). As noted above, the
Examiner found that Inoue discloses "an airbag 27 mounted in a rear end of
a fender laterally adjacent a hood." Id. at 3. A common definition of lateral
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Application 14/255,717
is "situated on, directed toward, or coming from the side."4 Based on this
common definition, Inoue's airbag 27, shown in dotted lines in Figure 1 of
Inoue, is situated on the side in a rear end of the fender. See Inoue Fig. 1.
We find that Inoue discloses an airbag mounted laterally and anticipates
claim 1 under 35 U.S.C. § 102(b). As Appellant does not dispute the
Examiner's other findings based on Inoue, we sustain the rejection of
claim 1. However, because our analysis differs from that of the Examiner,
we designate our affirmance as a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) to provide Appellant with a fair opportunity to respond.
We also sustain the rejection of claims 2, 5, 12-14, and 20 for the same
reasons stated for claim 1, but designate our affirmance as a new ground of
rejection pursuant to 3 7 C.F.R. § 41. 50(b) to provide Appellant with a fair
opportunity to respond. 5
Claims 8 and 17
Claim 8 depends directly from claim 1 and recites that "the airbag
further comprises a tether wherein the tether attaches to a vehicle structure."
Appeal Br. 49 (Claims App.). Claim 17 depends directly from claim 8. Id.
at 50. The Examiner finds that Inoue discloses "the airbag comprises a
tether 22 attached to a vehicle structure." Final Act. 4 ( citing Inoue Fig.
2B). Appellant argues that Inoue's "tether 22 is attached to the frame 7 and
the fender panel 12. The tether 22 is not attached to the airbag 27 as the
Examiner suggests." Appeal Br. 23. The Examiner responds that "[t]he
4 https://www.merriam-webster.com/dictionary/lateral (accessed on July 20,
2018).
5 Because of the new ground of rejection of claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Inoue, we do not reach the Examiner's rejection
of claim 1 as unpatentable over Inoue and Fayt.
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Application 14/255,717
tether 22/22a in Inoue lays at least partially on (i.e. connected to) the airbag
assembly" and "[t]he airbag comprises the tether 22/22a because the tether
22 and the cover part 16 together press a lower part 27a of the inflated airbag
27 against the front face of the front pillar 5." Ans. 4.
We do not sustain the rejection of claim 8 because the Examiner has
not shown that Inoue' s "airbag ... comprises a tether" as required by
claim 8. The Examiner identifies tether 22, which is adjacent to and contacts
Inoue' s airbag, but does not otherwise find that the tether is connected to the
airbag. This is not sufficient to establish that Inoue's airbag 27 comprises a
tether as required by claim 8. We, therefore do not sustain the rejections of
claim 8 and claim 1 7.
Rejections 3, 4, 5, 6, 7, 8, 9, and 11
Claims 3, 4, 7, 10, 15, 16, 18, 19, and 23 depend from claim 1.
Appeal Br. 48-51 (Claims App.). In these rejections, the Examiner relies on
the combination of Inoue and Fayt with additional disclosure from Hamada,
Hayashi, Soderquist, Takimoto, Retallick, Rajasingham, Rydsmo, and Mori.
Final Act. 5-9, 10. Appellant argues that these claims are patentable due to
their dependence from claim 1, which, according to Appellant, is not
unpatentable over Inoue and Fayt. Appeal Br. 28, 31-33, 37. Appellant,
however, does not offer any additional arguments for patentability based on
Hamada, Hayashi, Soderquist, Takimoto, Retallick, Rajasingham, Rydsmo,
and/or Mori or any combination of these references with Inoue and Fayt. Id.
We sustain the rejections of these claims for the same reasons stated for
claim 1. We designate our affirmance as new grounds of rejection pursuant
to 37 C.F.R. § 4I.50(b) under 35 U.S.C. § 103(a) as unpatentable over Inoue
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Application 14/255,717
in combination with the secondary references to provide Appellant with a
fair opportunity to respond.
Rejection 10
The Examiner finds that Inoue discloses the limitations of
independent claim 22 except for "a general 'L' shape or a general 'T' shape"
airbag. Final Act. 9. The Examiner finds that Breuninger discloses various
shape airbags. Id. at 9 (citing Breuninger, ,r,r 140,145, Figs. 17a, 17b). The
Examiner concludes that it would have been obvious "to modify the shape of
the airbag in Inoue et al so that it has an L-shape as disclosed in Breuninger
... to correspond to the surface of the hood and front window of the
vehicle." Id. at 10. The Examiner also reasons that the airbag configuration
is "a matter of choice which a person of ordinary skill in the art would have
found obvious absent persuasive evidence that the particular configuration of
the claimed item was significant." Id. (citing In re Dailey, 357 F.2d 669
(CCPA 1966)).
We initially note that Appellant does not dispute the Examiner's
findings in support of this rejection. See Appeal Br. 33-36. Appellant first
contends that Breuninger' s airbag is "attached to the roof rail of the vehicle"
in contrast to Inoue, which "teaches an air bag mounted to a fender region of
the vehicle." Id. at 34. According to Appellant, because "Breuninger and
Inoue deploy from completely different areas of the vehicle which require
completely different design considerations," one of ordinary skill in the art
"would simply not be motivated to combine the teachings of Breuninger
with the teachings of Inoue." Id. This argument is not persuasive because
the rejection is based on the combined teachings of Inoue and Breuninger
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Application 14/255,717
not a bodily incorporation of Breuninger's device into Inoue's device. See
In re Keller, 642 F.2d 413,425 (CCPA 1981) (citations omitted) ("The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art."); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) ("Combining the teachings of references does not involve
an ability to combine their specific structures.").
Appellant next contends that Inoue discloses "that 'an inflator which
is as compact and of a small output as possible is used as the inflator 25. "'
Appeal Br. 35. Appellant then argues that if Inoue's airbag
was modified to an 'L-shape,' as the Examiner suggests, it
would increase the cushion volume and as a result would likely
increase the output of inflator gas required to inflate the
cushion. This would increase the weight and size of the inflator
which would defeat the intended purpose of the invention of
Inoue.
Id. For the following reasons, we not persuaded by this argument.
Appellant does not direct us to any evidence that would support a
finding that the inflated volume of an L-shaped airbag would be significantly
different than Inoue' s disclosed airbag. Nor does Appellant provide any
evidence that any difference in inflated volume would necessarily result in
an increase in the "weight and size of' Inoue' s inflator and thereby defeat
the alleged intended purpose of Inoue' s invention. This contention is
attorney argument unsupported by evidence and is therefore entitled to little,
if any, weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
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Appellant next contends that the rejection is based on impermissible
hindsight. Appeal Br. 36. As explained above, Appellant's contentions fail
to persuasively apprise us of error in the Examiner's factual findings or
rationale for the combination of Inoue and Breuninger, which we determine
to be reasonable and supported by a rational underpinning. See KSR Int 'l
Co. v Teleflex Inc., 550 U.S. 398,416 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results."). Consequently, Appellant's
hindsight argument is ofno import. See In re Cree, 818 F.3d 694, 702, n.3
(Fed. Cir. 2016). We, therefore, sustain the rejection of claim 22.
DECISION
The Examiner's decision rejecting claims 1-5, 7, 10, 12-16, 18, 19,
20, and 23 is affirmed with the affirmance designated as new grounds of
rejection.
The Examiner's decision rejecting claims 8 and 17 is reversed.
The Examiner's decision rejecting claim 22 is affirmed.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides:
When the Board enters such a non-final decision, [Appellants], within
two months from the date of the decision, must exercise one of the following
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Application 14/255,717
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded
to the examiner. The new ground of rejection is binding
upon the Examiner unless an amendment or new Evidence
not previously of Record is made which, in the opinion of
the examiner, overcomes the new ground of rejection
designated in this decision. Should the examiner reject the
claims, [Appellants] may again appeal to the Board pursuant
to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to new grounds of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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